DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendment filed April 23, 2026 has been entered. Claims 1, 4-5, 7, 10-11, 14-20 have been amended. Currently, claims 1-20 are pending for examination.
Response to Arguments
Applicant's arguments filed April 23, 2026 with respect to Wheeler (US 2006/0047326), also mentioned in the April 23, 2026 Interview, have been fully considered but they are not persuasive. Upon further consideration, applicant’s arguments (p. 9) that Wheeler teaches away from the frequency ranges now recited in claims 1 and 11 (10 Hz – 5000 Hz) because the prior art states, “The corresponding frequency that will provide maximum coupling is 25 kHz. A frequency slightly above or below this frequency will not provide maximum coupling and will not be as effective” ([0046]) is unpersuasive. A reference ‘teaches away’ when it states that something cannot be done. In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1130 (Fed. Cir. 1994). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Additionally, this cited portion appears directed only to the high frequency (25kHz) of the frequency range delivered by the prior art. Wheeler states the neuromodulation stimulation delivered to a patient experiencing Parkinson’s disease tremor ([0033]) has a frequency that “is variable over the frequency range that couples effectively into the nodes of Ranvier over a range of myelinated nerve sheath diameters” ([0034]). Wheeler states a sufficiently high frequency (approximately 25 kHz) but also a sufficiently low frequency (approximately 250 Hz) ([0034]). In reciting these frequency ranges and specifically delivering at a frequency of “approximately 250 Hz”, Wheeler discloses “wherein the one or more stimulation parameters comprise a frequency between 10 Hz and 5000 Hz” as required by claims 1 and 11.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-6 and 13-16 of copending Application No. 19/271,273 in view of John (US 2008/0061961) and Wheeler (US 2006/0047326).
Claims 1-2, 8-10 and 11-12, 19-20 of the instant application recite all of the same limitations as claims 3 and 13 of the copending application except for the waveform generator to generate a waveform and the one or more stimulation parameters comprise a frequency between 10 Hz and 5000 Hz. John describes it is known in the art for a generator 22 to generate waveforms for providing to a plurality of spaced-apart stimulation electrodes ([0056]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a waveform generator to provide stimulation waveforms to stimulation electrodes as it is known in the art and yield predictable results. Wheeler teaches delivering electrical stimulation to nerves of a user at a frequency between 10 Hz and 5000 Hz is known in the art (“approximately 250 Hz” [0034]) to reduce Parkinson’s disease tremor ([0033]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try using an electrical stimulation frequency greater between 10 Hz and 5000 Hz as taught by Wheeler as the prior art teaches it is a known frequency sufficient to reduce the tremor of a user, the results of such a modification being reasonably predictable.
Claim 3 recites the one or more sensors comprise one or more motion sensors. This is recited in copending application claims 4 and 14.
Claim 4 recites the one or more sensors comprise a multi-axis accelerometer or gyroscope. A multi-axis accelerometer or gyroscope are known sensors in the art for detecting motion and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select a multi-axis accelerometer or gyroscope as the one or more sensors.
Claims 5 and 18 require the stimulation parameters further comprise an amplitude. John teaches amplitude is a common parameter for stimulation ([0056]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the stimulation parameters to further comprise an amplitude as it is known in the art and would yield predictable results.
Claims 6 and 13-15 recite the wearable device comprises the processor and the one or more sensors. This configuration is known in the art as shown in copending application claims 5 and 15.
Claims 7 and 16 recite the wearable device is configured to wirelessly communicate with the data portal device configured to receive the data, the data portal device further configured to transmit the data to the cloud-based computing network or the server for processing of the data. This transferring of data between communicating data porta devices and cloud-based servers is known in the art as shown in copending application claims 6 and 16.
Claim 17 recites the one or more movements of the wrist of the user comprise at last one tremor characteristic of the user. Motion sensing is recited in copending application claims 4 and 14.
This is a provisional nonstatutory double patenting rejection.
Claims 1, 5, 10-11, 18 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-19 of copending Application No. 19/271,267 in view of John (US 2008/0061961).
Claims 1 and 11 of the instant application recite all of the same limitations as claim 17 of the copending application except for the waveform generator to generate a waveform. John describes it is known in the art for a generator 22 to generate waveforms for providing to a plurality of spaced-apart stimulation electrodes ([0056]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a waveform generator to provide stimulation waveforms to stimulation electrodes as it is known in the art and yield predictable results.
Claims 5 and 18 recite the one or more stimulation parameters further comprises an amplitude. This is recited in copending application claim 18.
Claims 10 and 20 recite limitations found in copending application claim 19.
This is a provisional nonstatutory double patenting rejection.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “computing device” in claims 11 and 14 which according to the specification is selected from the group consisting of a smartphone, tablet and laptop ([0073] of the published application); and “data portal device” in claims 1, 11 and 16. Claims 7-8 and 19 are not interpreted under 35 U.S.C. 112(f) because these claims define the data portal device “is a smartphone or tablet computer”, therefore providing structure. The term “wearable device” as recited in independent claims 1, 11 and subsequent dependent claims is not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because even though the claim limitation(s) uses a generic placeholder that is coupled with functional language, claims 1 and 11 define the wearable device “comprises a band”, therefore providing structure..
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7-8, 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 7 references the data portal device, the cloud-based network and the server first introduced in claim 1 but claim 1 only recites these elements as alternatives, not as each element being required within the same system. Therefore if for example, claim 1 is interpreted as only requiring the data portal device, then the cloud-based network or server of claim 7 lack antecedent basis. If claim 1 is interpreted as only requiring the cloud-based network, then the data portal device and the server of claim 7 lack antecedent basis.
Claim 8 is rejected to for being dependent on and for failing to remedy the deficiencies of claim 7.
Claim 16 similarly recites the data portal device, the cloud-based computing network and the server but claim 11 only recites these elements as alternatives. Therefore claim 16 is rejected for the same reasons as claim 7.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-9, 11-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wheeler (US 2006/0047326) in view of Wu et al. (US 2007/0185409), John (US 2008/0061961) and Burdick et al. (US 2014/0180361).
Regarding claims 1, 11, 17, Wheeler discloses a non-invasive system for reducing tremor ([0033]), the system comprising: a plurality of spaced-apart stimulation electrodes 40-42 (fig. 4), wherein the plurality of spaced-apart stimulation electrodes 40-42 are positioned so as to provide non-invasive transcutaneous electrical stimulation of at least a median nerve of a user ([0052]) and a second nerve of the user (“a series of nerves that connect to the median nerve” [0052]) so as to reduce a user’s tremor ([0033]), wherein the plurality of spaced-apart stimulation electrodes 40-42 comprises at least one electrode 41 for contact with the user at a first skin surface to stimulate the median nerve ([0052]) and at least one electrode 40 for contact with the user at a second skin surface to stimulate the second nerve ([0052]), a waveform generator ([0058]); a processor/computing device 66 configured to cause the waveform generator to generate a waveform that is provided to one or more of the plurality of spaced-apart stimulation electrodes, wherein the waveform comprises one or more stimulation parameters ([0058]), wherein the one or more stimulation parameters comprise a frequency between 10 Hz and 5000 Hz ([0034]).
Wheeler does not expressly disclose a wearable device wherein the plurality of spaced-apart stimulation electrodes are positioned on the wearable device, wherein the wearable device comprises a band, and wherein the band is configured to wrap partially or completely around a wrist of the user. Wu et al. teaches it is known in the art to focus stimulation to the median nerve ([0057]) with the use of a band (Fig. 4) configured to wrap partially or completely around a wrist of a user for positioning effectors E1-E4 at a skin surface above targeted nerves ([0028], [0057]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Wheeler to position the plurality of spaced-apart electrodes on a wearable device, wherein the wearable device comprises a band configured to wrap partially or completely around a wrist of the user as taught by Wu et al. as such a configuration is known in the art to obtain predictable results, and would not alter the overall operation of the device.
Wheeler does not expressly disclose one or more sensors configured to obtain data corresponding to movements of the wrist of the user, wherein the one or more movements of the wrist of the user comprise tremor characteristics, wherein the processor is configured to adjust the one or more stimulation parameters to reduce the user’s tremor based on processing of the data using one or more machine learning algorithms, and wherein the processing of the data using the one or more machine learning algorithms is configured to be performed, at least in part, on a cloud-based network, the wearable device, a data portal device, or a server. John teaches it is known in the art to use one or more sensors configured to obtain data comprising one or more tremor characteristics of the user (“tremor magnitude” [0116]) and to have one or more processors or computing devices within a wearable device configured to receive and process the data from the sensors and adjust the one or more stimulation parameters to reduce the user’s tremor ([0063]; “responsive stimulation is stimulation which is triggered in response to sensed data when analysis of the data results in detection of one or more abnormal medical events” [0095]; [0107]). Burdick et al. teaches it is known in the art in the deliver of neural stimulation to use one or more sensors configured to obtain data and applying a machine learning algorithm to a closed loop system where adjustments to neurostimulation are performed based on information received from the sensors ([0191-0194]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Wheeler to use one or more sensors configured to obtain data corresponding to movements of the wrist of the user, wherein the one or more movements of the wrist of the user comprise tremor characteristics and wherein the processor is configured to adjust the one or more stimulation parameters to reduce the user’s tremor based on processing of the data configured to be performed, at least in part, on a cloud-based network, the wearable device, a data portal device or a server as taught by John in order to provide a closed loop system that can better adjust the stimulation according to patient response, and to further modify Wheeler to apply one or more machine learning algorithms to process the data in the closed loop system as taught by Burdick et al. in order to more efficiently search for effective parameter combinations ([0196]).
Regarding claims 2-3, 12-13,Wheeler in view of Burdick et al. discloses the one or more machine learning algorithms comprise a learning algorithm configured to tailor the one or more stimulation parameters over time to adjust the user’s tremor ([0191-0194]) and Wheeler in view of John discloses the one or more sensors comprise one or more motion sensors (“accelerometer” [0146], “motion detector” [0159]).
Regarding claim 4, Wheeler in view of John does not expressly disclose whereon the one or more sensors comprise a multi-axis accelerometer or gyroscope. Burdick et al. however teaches motion sensors are known in the art to comprise accelerometers or gyroscopes ([0028]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Wheeler to use a gyroscope as the one or more motion sensors as taught by Burdick et al. as it is a known type of sensor device for detecting physiological data such as motion detection on a patient, the results of such a modification being reasonably predictable in the art.
Regarding claims 5, 18, Wheeler discloses wherein the one or more stimulation parameters further comprises an amplitude ([0058]).
Regarding claims 6, 9, 14-15, Wheeler in view of John discloses wherein the wearable device comprises the processor/computing device, generator and the one or more sensors ([0056], [0063], [0095], [0107]), the processing of the data is performed, at least in part, by the computing device ([0063]; “responsive stimulation is stimulation which is triggered in response to sensed data when analysis of the data results in detection of one or more abnormal medical events” [0095]; [0107]). Additionally Wu et al. teaches it is known in the art to configure a wearable device (fig. 2) such that it comprises a processor/computing device 114 (fig. 1), generator 130 (fig. 1) and one or more sensors S1-S4 (fig. 4). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to position the processor/computing device, generator, and the one or more sensors on the wearable device as taught by Wu et al. as rearrangement of parts is a matter of obvious design choice In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975), known in the art and would not have altered the overall operation of the device.
Regarding claims 7, 16, Wheeler does not expressly disclose the wearable device is configured to wirelessly communicate with the data portal device configured to receive the data, the data portal device further configured to transmit the data to the cloud-based network or the server for processing of the data, and wherein the data portal device is a smartphone or tablet computer. Burdick et al. teaches it is known in the art for a wearable device 150 to wirelessly communicate with a data portal device 152 (“The external control unit 150 may connected via a connection 154 (e.g., a USB connection, wireless connection, and the like) to an external computing device 152” [0099]), the data portal device further configured to transmit the data to a cloud-based network or server 157 ([0100]) for processing the data, and wherein the data portal device is a smartphone or tablet computer (“tablet computing device” [0101], [0215], “other means of and communications devices for establishing a communications link between the computers may be used” [0217]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Wheeler to include a data portal device for communicating data between the wearable device and the cloud-based network or server as taught by Burdick et al. in order to provide a communications device capable of acting as an intermediary linking the wearable device to the could-based server for more effective transferring of data, the data portal device in the form of a smartphone or tablet as it is a known type of device useful for transmitting data between two devices, the results of such a modification being predictable in the art.
Regarding claim 8, Wheeler in view of Burdick et al. discloses wherein the data portal device is configured to perform analysis of the data ([0152]).
Regarding claim 19, Wheeler in view of Burdick et al. discloses wherein the data portal device is configured to perform analysis of the data ([0152]), and wherein the data portal device is a smartphone or tablet computer (“tablet computing device” [0101], [0215], “other means of and communications devices for establishing a communications link between the computers may be used” [0217]).
Claim(s) 10, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wheeler (US 2006/0047326) in view of Wu et al. (US 2007/0185409), John (US 2008/0061961) and Burdick et al. (US 2014/0180361) and further in view of Gaunt et al. (US 2009/0222053).
Regarding claims 10, 20, Wheeler in view of John discloses wherein the adjustment of the one or more stimulation parameters to reduce the user’s tremor comprises real-time adjustment based on the data ([0067], [0086]), but Wheeler does not expressly disclose wherein the second nerve comprises at least one of a radial nerve or an ulnar nerve. Gaunt et al. teaches a device for the analogous treatment of movement disorders ([0042]). While Gaunt et al. discloses invasive and non-invasive electrodes, the acknowledgement of disadvantages of stimulation only through electrodes attached to the body surface and the advantages of implanting wire components to route electrical current to the vicinity of target tissues ([0007]) is not a teaching away of using a non-invasive system since preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference ‘teaches away’ when it states that something cannot be done. In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1130 (Fed. Cir. 1994). Regardless, Gaunt et al. teaches it is known in the art to treat tremors through the stimulation of both the median nerve 46 and the radial nerve 50 (fig. 4; [0066]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Wheeler to try stimulating the radial nerve as the second nerve as taught by Gaunt et al. as it is a known combination of nerves to stimulate to activate neural impulses for the effective treatment of movement disorders ([0066]), the results of such a stimulation being reasonably predictable in the art. The limitation, “wherein the system is configured to provide transcutaneous electrical stimulation for up to 24 hours in a day” is a matter of intended use, and does not result in a structural difference between the claimed invention and the prior art. “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICA S LEE whose telephone number is (571)270-1480. The examiner can normally be reached M-F 8-7pm, flex.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Hamaoui can be reached at (571) 270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERICA S LEE/Primary Examiner, Art Unit 3796
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